Tuesday, January 26, 2010

Universities and Intellectual Property: A Minefield?

One of the things that I never understood at NYU is what are the rights that the university has on the work produced by the faculty members and students.

Following the intellectual properly law, there are four basic types of intellectual properly:
  • Copyright
  • Patents
  • Trademarks
  • Trade Secrets
If someone works for a corporation, things are pretty clear. Any paper, before being published needs to get approval. Any developed algorithms and code written is the intellectual property of the company and the company owns the copyright for the code, and can treat the algorithms as a trade secret. The company may also patent useful inventions and register some valuable trademarks. But, in all these cases, everything that is being produced within the corporation is work made for hire and owned by the corporation. The employee has typically no ownership of the produced work and it is commonly prohibited for the employee to work for another company or provide any sort of consulting services..

For the work of faculty, I always felt that everything falls into a grey area. Most of the work is made public as soon as possible. Code is often released as open source, following some pretty liberal licensing scheme, or even released to the public domain. Papers are written and publicized without much, if any, vetting and the algorithms and methods described there are typically in the public domain. The only case where a university has some control over intellectual property is when a patent is filed and granted.

Now, the great confusion arises when the faculty wants to work with a corporation and the university allows faculty members to engage into consulting agreements. Who owns and controls the expertise and discoveries of the faculty member?

Let's say that myself, Panos, invented an algorithm in area X, wrote a paper, and published the code in an open source format. Corporation A, comes to me and asks me to consult them on area X. What is the control that my employer, NYU, has on my work? Yes, Corporation A wants to hire me because of the IP that I produced while at NYU. This IP though is publicly available, so I do not really transfer anything protected under copyright law.

I have asked this question to our own tech transfer office. Unfortunately, I did not get back a clear answer. They told me that I cannot transfer code and that any patent is owned by NYU. Correct, these are indeed intellectual property assets. (Although for the case of open source code, this is again confusing.) But what about the expertise that a faculty member develops? In corporations this is often protected using some no-compete clauses in the employment contract, effectively preventing employees from directly transferring know-how. In universities, there is no such provision.

I find this merging of academic and corporate worlds to be particularly confusing and I find this to be a potential minefield. Who owns what? Any ideas? Any experiences? How other universities treat the concept of tech transfer?